Intellectual Property Law

Published: November 15, 2011

John M. Halan

Shareholder

Brooks Kushman, Southfield

Metro Detroit will benefit directly from the recent passage of the Leahy-Smith America Invents Act, which designates that one of three new regional satellite offices of the U.S. Patent and Trademark Office will be located in Detroit. It is anticipated that the facility, set to open in the next three years, will employ more than 100 workers — many of them highly-skilled patent examiners.

“During the patent application process, it is sometimes very beneficial to meet in person with a patent examiner to weigh the merits of an invention,” says John M. Halan, shareholder for Brooks Kushman in Southfield. “At present, that means an expensive flight to Washington, D.C. With the new office, we can save that expense. Plus, the office should draw patent attorneys from the surrounding region — from Chicago or Indianapolis, for example.” In addition, Halan says, it is anticipated that a share of patent examiners slated for Detroit will be well-versed in regional technologies such as the automotive industry.

Overall, the new law is designed to reduce a backlog of 700,000 patent applications while streamlining fee-hike approvals and other internal operations. The crux of the new measure, set to take effect in spring 2013, provides for a “first-to-file” application process, rather than “first-to-invent.”

Along with other changes in the law, small businesses and independent entrepreneurs in some cases will have a tougher time competing against large corporations in the patent application arena.

For example, patent applications and patents can be challenged under certain circumstances and within limited time periods. This should favor large companies that have the resources to monitor patent applications and grants. As to the first-to-file process, “large companies have lots of resources to throw at developing ideas and filing applications on inventions as soon as possible,” Halan says. “But smaller companies are more nimble and may win the first-to-file race because they don’t have layers of bureaucracy to get through.”

Another benefit of the new law is that it allows “virtual” patent-marking on a product, such as the word “patented,” followed by a website address where pertinent patent numbers can be found. Under the system, product tooling doesn’t have to be changed every time a new patent pertinent to the product is issued.

“Any updated information about the patent can be easily accessed on a website,” Halan says. “This can save manufacturers thousands of dollars in retooling or labeling costs, and allow businesses to use those resources for more productive uses.” —R.J. King